Water Technology, LLC et al v. Kokido Development Limited et al

Filing 162

MEMORANDUM AND ORDER: IT IS HEREBY ORDERED that Plaintiff's motions to dismiss are GRANTED. ECF Nos. 142 , 145 . Signed by District Judge Audrey G. Fleissig on 6/25/2019. (AFC)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MISSOURI
EASTERN DIVISION

WATER TECHNOLOGY, LLC and
WATER TECH CORP.,

)
)
)
Plaintiffs/Counterclaim Defendants, )
)
vs.
)
)
KOKIDO DEVELOPMENT LIMITED )
And MENARD, INC.,
)
)
Defendants/Counterclaim Plaintiffs. )

Case No. 4:17-CV-01906-AGF

MEMORANDUM AND ORDER
This matter is before the Court on Water Tech’s motions (ECF Nos. 142, 145) to
dismiss certain counterclaims asserted by Kokido. Both motions will be granted.
On June 30, 2017, Water Tech filed a complaint asserting that Kokido’s products
infringe five Water Tech patents, known by the parties as the ‘182, ‘441, ‘460, ‘975, and
‘D396. Kokido filed a counterclaim seeking declaratory judgment of non-infringement
and invalidity as to all five. Water Tech filed an amended complaint removing its claims
with respect to the ‘182 and ‘441, which were dismissed with prejudice. On June 27, 2018,
Kokido filed an answer to the amended complaint (ECF No. 80) retaining its counterclaims
regarding the dismissed patents (counterclaims 3, 4, 7, 8, 10, and 11) and adding a new
counterclaim of infectious unenforceability with respect to the ‘460 (counterclaim 12).

Water Tech moved to dismiss these counterclaims (ECF Nos. 95, 142), 1 and the matter was
fully briefed (ECF Nos. 96, 106, 113, 144). While the motion was still pending, Water
Tech issued a covenant not to sue, which the parties agree divests this Court of jurisdiction
with respect to counterclaims 3, 4, 7, 8, 10, and 11. As such, Water Tech filed an
unopposed motion to dismiss those counterclaims by consent of the parties (ECF No. 145).
That motion will be granted. Water Tech’s motion to dismiss with respect to counterclaim
12 (ECF No. 142) remains in dispute and will also be granted for the reasons set forth
below.
In its counterclaim 12, Kokido seeks declaratory judgment of infectious
unenforceability as to the ‘460, alleging that Water Tech knowingly made material
misrepresentations to the USPTO in the prosecution of the ‘460’s parent patent 2 (the ‘157)
in order to overcome the Schuman patent. 3 Specifically, in that prosecution, Water Tech
distinguished its product from Schuman by asserting that Water Tech’s product had a
toroidal body, whereas Schuman was not toroidal. Kokido alleges that Water Tech’s
representation was knowingly false in that Schuman is cylindrical, and a cylinder is a
toroid. Water Tech contends that this counterclaim should be dismissed for failure to state

1

Water Tech’s original motion to dismiss, filed July 18, 2018 (ECF No. 95), was
dismissed without prejudice (ECF No. 141) in the wake of the Court’s Markman ruling
(ECF No. 137). Water Tech renewed its motion to dismiss on April 4, 2019 (ECF No.
142).

2

U.S. Patent No. 6,797,157.

3

U.S. Patent No. 4,962,559.
2

a claim under Rule 12(b)(6) because the representation was merely attorney argument and
not an intended deception.
The purpose of a motion to dismiss under Rule 12(b)(6) of the Federal Rules of
Civil Procedure is to test the legal sufficiency of the complaint. World Wide Stationery
Mfg. Co., Ltd. v. U.S. Ring Binder, L.P., 4:07-CV-1947 (CEJ), 2009 WL 1684702, at *1
(E.D. Mo. June 16, 2009). “To survive a motion to dismiss, a complaint must contain
sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its
face.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). “A claim has facial plausibility when
the plaintiff pleads factual content that allows the court to draw the reasonable inference
that the defendant is liable for the misconduct alleged.” Id. Inequitable conduct must be
pleaded with particularity under Rule 9(b). World Wide Stationary, 2009 WL 1684702, at
*1.
To prove infectious unenforceability, an accused infringer must establish (1)
inequitable conduct sufficient to hold the parent patent unenforceable and (2) a direct
relation between that conduct and enforcement of the child patent. Consolidated Aluminum
Corp. v Foseco International Ltd., 910 F.2d 804, 810-811 (Fed. Cir. 1990). With respect
to the first prong, the accused infringer must prove that the patentee acted with the specific
intent to deceive the PTO. Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276,
1290 (Fed. Cir. 2011). A finding that the misrepresentation or omission amounts to gross
negligence or negligence under a “should have known” standard does not satisfy this intent

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requirement. Id. Specific intent to deceive must be “the single most reasonable inference
able to be drawn from the evidence.” Id. Attorney argument attempting to distinguish
claims from prior art does not rise to the level of affirmative misrepresentation, and the
examiner is free to reject such argument and reach his own conclusion. Young v. Lumenis,
Inc., 492 F.3d 1336, 1349 (Fed. Cir. 2007). That is precisely what occurred here.
The parties do not dispute that donuts and cylinders are both toroids. The ‘460
prosecution history, incorporated by reference into Kokido’s counterclaim pleadings,
reflects that Water Tech’s use of “toroidal” refers to the curvilinear body of the ‘460, as
shown in Figure 2, where the “donut hole” creates the handle, as opposed to the elongated
cylinder of Schuman. Water Tech simply sought to distinguish the compact shape of the
‘460 in support of its claim of superior maneuverability. And the PTO examiner clearly
was not deceived by Water Tech’s usage. The examiner recognized that Schuman did
indeed have a toroidal body, but he still allowed the amendment because Schuman did not
teach a toroidal body wherein the hole created the handle. Viewing Kokido’s pleadings
and the referenced patents in full context, the Court finds Kokido’s allegations of deception
entirely speculative and insufficient to state a claim to relief that is plausible on its face.
Accordingly,
IT IS HEREBY ORDERED that Plaintiff’s motions to dismiss are GRANTED.
ECF Nos. 142, 145.

AUDREY G. FLEISSIG
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UNITED STATES DISTRICT JUDGE
Dated this 25th day of June, 2019.

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